DETAILED ACTION
Notice of AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1- 17 rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent 12,353,654 B2 based on the below claim correspondence table [format: instant application claim = equivalent patent claim(s)].
Claim 1 = Claims 1 + 8
Claim 2 (dependent upon the above equivalence) = Claim 2
Claim 3 (dependent upon the above equivalence) = Claim 3
Claim 4 (dependent upon the above equivalence) = Claim 4
Claim 5 (dependent upon the above equivalence) = Claim 1 + 5
Claim 6 (dependent upon the above equivalence) = Claim 1 + 6
Claim 7 (dependent upon the above equivalence) = Claim 1 + 7
Claim 8 (dependent upon the above equivalence) = Claim 1 + 9
Claim 9 (dependent upon the above equivalence) = Claim 10
Claim 10 (dependent upon the above equivalence) = Claim 11
Claim 11 (dependent upon the above equivalence) = Claim 12
Claim 12 (dependent upon the above equivalence) = Claim 13
Claim 13 (dependent upon the above equivalence) = Claim 14
Claim 14 (dependent upon the above equivalence) = Claim 15
Claim 15 (dependent upon the above equivalence) = Claim 16
Claim 16 (dependent upon the above equivalence) = Claim 17
Claim 17 (dependent upon the above equivalence) = Claim 18
Although the claims at issue are not identical, they are not patentably distinct from each other because compared claims are in respect to the same inventive subject matter.
See M.P.E.P. 804(II)(B)(2)(a) Construing the Claim Using the Reference Patent or Application Disclosure:
"The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ "Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01. Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). In this case, the compared claim sets are directed to the same invention and subject matter, where current claim set possesses different claim scope in comparison thereof. Since the claimed subject matter is not directed to a different invention, the office concludes this circumstance to be indicative of nonstatutory double patenting.
Please note, this is a non-provisional non-statutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Duane N. Taylor Jr. whose telephone number is (571) 272-4703. The examiner can normally be reached Monday- Saturday [5:30am- 10pm].
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Temesghen Ghebretinsae can be reached at (571) 272-3017. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Duane N. Taylor Jr.
Primary Patent Examiner
Art Unit 2626
/DUANE N TAYLOR JR/Primary Patent Examiner, Art Unit 2626